Marking

And then there’s that pesky marking statute, 35 U.S.C. § 287(a).  Under § 287(a), a patentee or other party selling a patented product under the patent must mark that product with the patent number to provide notice to the public that the product it may be pursuing is patented. (No, there is not a penalty for overuse of the letter “p”.  Why do you ask?)  If they don’t satisfy the marking statute, damages can be limited to the point that the word “presuit” will henceforth cause the patentholder uncontrolled crying fits. The issue of when a plaintiff has the burden of proving compliance with the marking statute at trial was the subject of an interesting order from across the street earlier today.

Attorney Prohibited From Filing New Patent Cases for 120 Days as Rule 11 Sanction

I posted several days ago on the show cause order Judge Gilstrap issued with respect to an attorney’s “systematic carelessness” in filings on behalf of the plaintiff in the Ruby Sands litigation.  The full post is available to subscribers here. In an order memorializing the rulings at the hearing, Judge Gilstrap suspended the attorney’s ability to file new cases for 120 days, with the following language:

“Mr. Zimmerman’s repeated acts of negligence in his practice before this Court—as further expounded upon in the Court’s Order to Show Cause and on the record at the hearing – compel the Court to conclude that some targeted action should be taken to prevent further lapses in adequate compliance with the Federal Rules of Civil Procedure, the Local Rules of Practice and the direct instructions of the Court. Such is necessary to support and uphold the integrity of this Court. While Mr. Zimmerman admirably accepted fault at the hearing and made no excuses for his conduct, the fact remains that the instances which precipitated the Court’s Order to Show Cause nonetheless occurred and should be addressed.”

Accordingly, pursuant to Rule 11 of the Federal Rules of Civil Procedure the Court ordered that Mr. Zimmerman be prohibited from filing any new cases within the Eastern District of Texas for 120 days from the date of the hearing on April 26, 2017. The prohibition expires automatically, and does not affect Mr. Zimmerman’s ability to represent clients in cases currently pending.

How Do You Know When The Case Is Over?

Ever had that situation where you think you have a settlement, but the other side doesn’t, or vice versa?  I mean in the absence of horned and breastplated opera singers, of course. That was the situation presented in this case, where the parties in a patent infringement case appeared to have settled their dispute, but the final settlement agreement fell through when Defendants learned that the Patent Trial and Appeal Board (PTAB) had instituted inter partes review (IPR) of one of the asserted patents. The Court found that

Limine Order Prohibiting Reference to “Presumption of Validity”

Erfindergemeinschaft UroPep GbR v. Lilly is closing in on trial, and on Monday visiting Judge William C. Bryson of the Federal Circuit, who as readers know, maintains an active docket of district court patent cases in Marshall and is formally invested as an honorary trial judge in the EDTX with a certificate and everything, recently issued a 13 page order ruling on the parties’ motions in limine.  (Ed. note:  “Erfindergemeinschaft” does not, as you might think, mean “find the mine shaft”, but instead roughly translates to “inventor’s association”, which makes sense since the company was founded by research scientists at Hannover Medical School.  No clue what “Uropep” means in this case involving a drug used to treat erectile dysfunction, but I’ll keep looking). The holding that has the attention is the last paragraph, in which Judge Bryson decided to exclude UroPep from referring to the “presumption of validity”.  He notes that there are cases going both ways on this point, and concludes that that simply means that prohibiting the use of the phrase would not be error.  Having looked both ways, he explains his ruling: “In the Court’s judgment, the use of the phrase “presumption of validity” would add little to the jury’s understanding of the burden of proof on the validity issues. Moreover, the phrase might be confusing to the jury, to the extent that the jury is required to consider both that phrase and the Court’s instructions on the burden of proof. At minimum, the use of the term “presumption” would require a further definitional instruction by the Court, without leading to any greater insight on the jury’s part as to the nature of the burden of proof on the validity issues. Accordingly, the Court will exclude the use of the phrase “presumption of validity” and instead will address the burden of proof in its instructions to the jury.” 237 – Uropep  

Plaintiff’s motion for summary judgment on anticipation defenses denied

If you are under 40, you probably have no idea why there is a picture of a bottle of ketchup next to the word “anticipation.”  Go down the hall and ask a senior partner and enjoy the stream of profanity that comes back at you. Anyway, as I type this, the parties are arguing this case to the jury across the street in Judge Gilstrap’s court, but I thought it was worth providing a brief analysis of the court’s ruling last month recommending denying the plaintiff’s motion for summary judgment on the defendants “anticipation” defenses. This is a patent infringement case in which the plaintiffs allege that the defendant’s computer program infringes multiple claims of the three asserted patents. The plaintiff moved for summary judgment on the anticipation defenses based on the testimony of the defendant’s expert. In its order denying the motion,

Default judgment in patent case set at $20,000 based on analysis of 20 prior settlements

A few days ago I saw a post that someone was claiming that the average settlement in a “patent troll” case was $300,000, and tweeted in response “I would have said $30,000, and lately most less than that. Just my experience.” Karma being the friend that it is, that five days later Magistrate Judge Love issued this order setting the amount of a default judgment in a case at $20,000.  While the order is redacted to remove references to the amounts of the prior settlements, what it does reveal is that the prior licenses led the Court to the $20,000 number, as discussed below.

Pretrial Rulings: Limines, Experts & Summary Judgment

They aren’t quite as near and dear to my heart as JMOL rulings, but pretrial rulings are a close second.  The parties the ground rules for the conduct of the trial, including limine rulings, orders resolving the inevitable disputes over admissibility of expert testimony, and rulings on any summary judgment motions that remain outstanding. The seven rulings from this case, which is set for trial in only a few weeks, are a pretty good example of the genre.  Below are copies of the rulings with analysis.